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Apple, Microsoft go to battle over App Store trademark

Michael Feigin, Esq. is quoted in the following article available at http://www.mobilemarketer.com/cms/news/legal-privacy/8782.html

Apple, Microsoft go to battle over App Store trademark

Apple

Can Microsoft take a bite out of Apple?

Microsoft is going toe-to-toe with Apple in an attempt to block the iPhone-maker’s effort to land a trademark for exclusive use of the term “app store.”

Microsoft has filed an objection to the filing of Apple’s trademark application in the United States Patent and Trademark Office’s Trademark Trial and Appeal Board, or TTAB, on the grounds that “app store” is a generic term in common parlance. If Microsoft is successful in its bid to block Apple’s trademark, then anyone selling applications could call the virtual storefront an app store.

“If the term ‘app store’ is just describing what it is, unless it has been in use for at least five years, Apple cannot get a trademark on this,” Michael Feigin, attorney at Feigin and Associates, New York.

“I’m surprised that it was accepted by the patent office, because it seems to be a fairly straight-forward description,” he said. “If it is a store that sells apps, ‘app store’ is a description, and everyone knows that ‘app’ means ‘application’—that is common usage.

“Microsoft has the better position here—the patent office should rule that the trademark should not be allowed.”

Microsoft vs. Apple
Apple’s argument is that it was first-to-market and has spend millions of dollars on advertising featuring the App Store moniker.

In the complaint filed against Apple with the USPTO, Microsoft argues that “app" is a common generic name for the goods offered at Apple's store, as shown in dictionary definitions and by widespread use by Apple and others, and that "store" is generic for the retail store services for which Apple seeks registration, and indeed, Apple refers to its App Store as a store.

Furthermore, "the undisputed facts further show that the combined term 'app store' is commonly used in the trade, by the general press, by consumers, by Apple's competitors and even by Apple's founder and CEO Steve Jobs, as the generic name for online stores featuring apps," per Microsoft’s filing.

Based on the fact that the App Store is indeed a store that sells apps, Microsoft claims Apple should not be allowed to have a trademark on the "App Store" name.

With its Windows Phone 7 operating system jostling with Apple’s iOS and others for market share, Microsoft is seeking any leg up it can get.

If its complaint proves successful, Microsoft would undoubtedly like to market its WP7 “App Marketplace” as an “app store.”

Which argument holds water?
So which titan should win out? Should Apple’s first-mover advantage take precedence, or should Microsoft’s point about common usage win the day?

The answer could have repercussions for the entire mobile content distribution ecosystem.

“I believe Microsoft has the better argument here because the words ‘app store’ are individually and collective generic for a retail store featuring apps, because the term ‘app store’ has been used by so many others in the marketplace to describe their app stores such that the term cannot function as a single-source identifier such as iPad or iPhone, where thereis only one recognizable source linked to such marks,” said Harris Wolin, partner at Myers Wolin LLC, Morristown, NJ.

“Generic terms by their very nature should be in the public domain and free for all to use,” he said.

Please click here to read Microsoft's Motion for Summary Judgment in its opposition to Apple's App Store trademark application.

Click here to read an additional filing supporting Microsoft's opposition.

Mr. Wolin noted that this is only an opposition within the Trademark Office, which means that the final result is the life or death of only the trademark application.  

Monetary damages or an injunction are not within the jurisdiction of the Trademark Trial and Appeal Board. 

In other words, Apple filed an application for “app store,” and Microsoft objected and asserts that the application should be refused on the basis of genericness, and therefore the application should be abandoned. 

This result would allow Microsoft and others to continue to use the term “app store” without being concerned about a lawsuit from Apple.

“Microsoft filed the opposition because it—and others—would be damaged if Apple was allowed to claim exclusive use to the term ‘app store’ in connection with retail store services featuring apps, especially because the mark has experienced widespread adoption by others, and more especially since the terms ‘app’ and ‘store’ are each generic in their own right,” Mr. Wolin said.

“Even though Apple sent out cease-and-desist letters to some smaller players that tried to register trademarks, including the terms ‘app store,’ it has not really reigned in the widespread public generic use of such terms,” he said. “In fact, Microsoft was able to point out that even Apple uses such terms generically in press releases, etcetera.

“The fame of Apple's App Store cannot negate a finding of genericness.” 

While many consumers do associate the term “App Store” with Apple, that may not be enough for the company to win the trademark battle.

Attorneys interviewed by this publication were unanimous in coming to the conclusion that Microsoft has the stronger argument here.

If the USPTO aggress that “app” is the equivalent of “application,” it seems as if it must find in favor of Microsoft. However, as with most legal arguments, there is some grey area.

“I’m very surprised that the trademark examiner passed along Apple’s trademark application for publication," said Andrea Calvaruso, partner at Kelley Drye & Warren LLP, New York. “The trademark examiner never objected to the application on the basis that it is generic, which is Microsoft’s argument—he found it to be descriptive.

“A generic mark is the definition of the product or service itself, but if it is merely descriptive, then a company could get a trademark if it has used the term for many years and can prove that consumers have come to identify the terms strictly with one source,” she said. “‘App store’ could be an abbreviation for Apple Store, a term which it owns—Apple alleges ‘app store’ has also acquired that secondary meaning.”

Microsoft has put in a ton of evidence in its filing, and it remains to be seen what Apple will argue in response.

Most likely, Apple will argue that it has become associated with the term by the consumer and stress the fact that it has spent so much money advertising its App Store.

Distributors of applications nationwide are eagerly awaiting the result of the dispute.

“In its trademark filing, Apple did not even assert that they have had exclusive use of the term, so I am surprised that the trademark examiner did not find ‘app store’ to be generic,  as many other companies do use ‘app’ or ‘app store’ generically,” Ms. Calvaruso said.

“Microsoft is saying ‘This term is generic, and we and everyone else that creates applications will be harmed if you let Apple have this trademark,’” she said.

“If the term is generic, Apple might have been the first company to use the term ‘app store,’ but if, as Micrtosoft alleges, everyone uses the term ‘app’ to mean ‘application,’ and Apple hasn’t used it exclusively, I think that Apple is going to have a hard time convincing the trademark office that ‘app store’ is not a generic term.”